Canada: A Guide To Canadian Trade-Marks

1. What Is A Trade-Mark

A trade-mark is a word, a symbol, a design, or a combination of these, used to distinguish the products or services of one person or organization from those of others in the marketplace. Trade-marks come to represent not only actual products and services, but the reputation of the producer. As such, they are considered valuable intellectual property. A registered trade-mark can be protected through legal proceedings from misuse and imitation.

2. Trade Name vs. Trade-Mark

A trade name is the name under which an entity conducts its business, whether it be a personal name, the name of a corporation or a partnership or a name adopted for a segment of that business, i.e. a division of a company. The trade name can be registered under the Canadian Trade-marks Act (the "Act") only if it is also used as a trade-mark, that is, used specifically to identify products or services.

3. Registered Trade-Mark vs. Unregistered Trade-Mark

A registered trade-mark is one that is entered on the Canadian Trade-marks Register. Businesses are not required to register their trade-marks. Using a trade-mark for a certain length of time can establish ownership through Common Law. However, registration is highly recommended.

Registration is prima facie evidence of ownership of the mark. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it. Keep in mind also that a registered trade-mark is a valuable asset for business expansion through licensing franchises.

Registration of a trade-mark gives the registered owner the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter. Canadian registration does not, however, provide protection in other countries.

4. Trade-Mark Agents

Preparing a trade-mark application and following through on it can be a complex task, particularly if a third party challenges the applicant's right to the mark. Applicants may file on their own, but it is highly recommended that they hire a trade-mark agent to do so on their behalf. An experienced, competent trade-mark agent who is well-briefed can help minimize problems caused by such obstacles as a poorly-prepared application or inadequate research. Further, if the applicant intends to register marks in other countries, the use of a trade-mark agent is strongly recommended. Once an agent is appointed, the Trade-marks Office will correspond with no one else about the application. Applicants may, however, change agents at any time.

5. Who Can Register A Trade-Mark

Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for products or services, provided they meet the requirements of the Act and Regulations.

6. How Is A Trade-Mark Registered

Any of the entities noted above can register a trade-mark by filing an application for registration with the Trade-marks Office in Hull, Quebec. The application then goes through a stringent examination process to make sure that it meets all requirements of the Act. Keep in mind that in most instances, the applicant's trade-mark must be used in Canada before it can be registered. While the application may be based on "proposed use," the mark must be put into use before registration can occur.

7. Examination Process

When the Trade-marks Office receives an application, it does the following:

• Searches the trade-marks records to find any other trade-mark that may come into conflict with the one submitted and, if one is found, informs the applicant of it.
• Examines the application for compliance with the requirements of the Act and Regulations and informs the applicant of requirements which are not met by the application.
• Publishes the application in the Trade-marks Journal, which is issued every Wednesday.
• Allows time for opposition (challenges) to the application. Anyone may file a statement of opposition with the Registrar. After considering the evidence filed by either or both parties, the Registrar decides whether to refuse the application or reject the opposition. The parties are notified of the decision and reasons why.
• If no one files an opposition to the application, the mark is allowed. Upon payment of the registration fee and the filing of a declaration of use in the case of a proposed use trade-mark application, the mark is registered.

8. Foreign Registration

Registering a trade-mark with the Canadian Trade-marks Office protects rights in Canada only. If the registered owner of the mark is selling products or services in other countries, they should consider registration in each of those countries. Contact a trade-mark agent for information on foreign registration.

MAKING SURE YOUR TRADE-MARK CAN BE REGISTERED

A trade-mark will qualify for registration as long as it does not conflict with the Act, which sets out the requirements for registration. Sections 9 through 12 of the Act deal with the kinds of marks that may not be registered.

1. Names And Surnames

A trade-mark will not be registered if the trade-mark is primarily a person's full name or surname, or that of another individual (e.g. John Doe or Jane Smith, Wong, Cohen, etc.). An exception to this rule is if the applicant can prove that the products or services have become known under the name (e.g. "Smith" or "Wong" or "Cohen"), so that the word now connotes more than a person's name or surname in the public's mind. There are numerous examples of personal names that have become associated with a food, drink, or other product and are now registered trade-marks.

2. Clearly Descriptive

An applicant may not register a word that clearly describes a feature of the products or services. For example, "sweet" for ice cream, "juicy" for apples, and "perfectly clean" for dry cleaner services could not become registered trade-marks. All good apples could be described as "juicy" and all ice cream as "sweet"; these are inherent characteristics of the products. If the applicant were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods, which would be unfair.

3. Deceptively Misdescriptive

A further restriction is if the mark is not clearly descriptive, but clearly misleading, or in the words of the Act, "deceptively misdescriptive." For example, an applicant could not register "sugar sweet" for candy sweetened with artificial sweetener, and "air express" for a courier service that uses ground transportation.

4. Place Of Origin

An applicant may not register a word that clearly designates the place of origin of the products or services, or that misleads the public into thinking that the products come from a certain place if they do not. Thus, Paris Fashions, Atlantic Cod, Toronto Courier Service, B.C. Wines, or Danish Furniture could not be registered for those particular products or services. Allowing an applicant to use place names as part of their trade-mark would be to give the applicant a monopoly on a geographical term and would be unfair to others.

5. Disclaimers

A disclaimer is a statement indicating that the applicant does not claim exclusive rights for a certain word or words appearing in the trade-mark. In this way, an applicant can use clearly descriptive words in the trade-mark which are unregistrable on their own (as described above), with the understanding that the applicant does not acquire rights over them. Therefore, these words are still part of the trade-mark, but the applicant is not claiming exclusive rights for these specific words.

6. Words In Other Languages

Words that constitute the name of the products or services in another language - such as "gelato," Italian for ice cream; "anorak," Inuktitut for parka; or "Wurst," German for sausage - cannot be registered.

7. Causing Confusion

Beware of words, symbols, sounds and ideas that suggest someone else's trade-mark. If it is confusingly similar to a registered trade-mark or a pending mark, it will be refused. Trade-mark examiners take into account various factors when determining whether trade-marks are confusing. For example, they determine:

1. whether the trade-marks look or sound alike and whether they suggest similar ideas; and
2. whether they are used to market similar products or services.

8. Prohibited Marks

Subsection 9(1) of the Act lists various kinds of marks that are expressly prohibited. A trade-mark that resembles certain official symbols may not be registered unless the applicant has the consent of the authority in question. These official symbols include:

• official government symbols, e.g., the Canadian flag;
• coats of arms of the Royal Family;
• badges and crests of the Armed Forces and the letters R.C.M.P.;
• emblems and names of the Red Cross, the Red Crescent, the United Nations;
• armorial bearings, flags and symbols of other countries; and
• symbols of provinces, municipalities and public institutions.

These prohibitions are designed to prevent people from "cashing in" on the prestige and authority of the above-mentioned institutions and misleading the public. Subsection 9(1) of the Act also prohibits subject matter that is obscene, scandalous or immoral.

Another prohibition covers the use of portraits or signatures of living persons or persons who have died within the preceding 30 years. For example, using the photo of an existing rock group to promote a record store would be prohibited unless the record store had formal consent to do so.

CANADIAN INTELLECTUAL PROPERTY OFFICE FEES

The table below sets out the current fees for some of the more common transactions involving a trade-mark registration. The full fee schedule can be viewed at www.cipo.gc.ca.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.